The Duke vs. Duke U

Jul. 09, 2014 @ 09:53 PM

Descendants of the legendary actor John Wayne want to use the actor’s nickname “the Duke” in the name of a new bourbon and for other products. But Duke University has opposed the use, arguing that it would cause confusion with the school.

A company owned by Wayne’s descendants filed a lawsuit in a federal court in California last week. In the legal complaint, the company argues that the registration and use of trademarks “Duke” and “Duke John Wayne” for alcoholic beverages are not likely to cause confusion with the school or to infringe on the university’s valid trademarks.
“Apparently, Duke University believes that the products bearing John Wayne’s world-renowned image and signature, like the bottle of bourbon depicted … will somehow confused as being associated with Duke University,” the complaint said.
Earlier this year, a distillery co-founded by John Wayne’s son Ethan announced that a bourbon called the “The Duke Kentucky Straight Bourbon” would be available in select markets in May. According to a news release, it was named for the actor and made based on bottles dating back to the early 1960s in his private collection.
The company owned by Wayne’s descendants, John Wayne Enterprises, had filed a trademark application for the use of the name “Duke” in February 2013 for marketing alcoholic beverages except beer and filed another in March of last year for the use of “Duke John Wayne.” The university fought the registrations with filings in November and in December.
That wasn’t the first time the university has fought the company’s attempts to register the name. The university filed a notice to oppose a 2005 application to register the name “Duke” in connection with restaurant services. That application was abandoned, according to a U.S. Patent & Trademark Office spokesman. And after the university filed a petition for cancellation notice for a trademark in 2010, another was canceled.
According to the complaint, the university argued the company has tried to register a trademark “substantially similar” to the university’s for goods closely related to goods and services that the university uses its trademark for, and the use would falsely suggest a connection to the school.
“While we admire and respect John Wayne’s contributions to American culture, we are also committed to protecting the integrity of Duke University’s trademarks,” said Michael Schoenfeld, Duke University’s vice president for public affairs and government relations, in a prepared statement. “As Mr. Wayne himself said, 'Words are what men live by …  words they say and mean.’”
An attorney for the company John Wayne Enterprises declined to comment for this story.